Solid Works Corporation v. Lee TaeJoong
Claim Number: FA0112000102817
The Complainant is Solid Works Corporation, Concord, MA (the ¡°Complainant¡±) represented by Holly Stratford. The Respondent is Lee TaeJoong, Seoul, Korea (the ¡°Respondent¡±).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solidworks.info> registered with YesNIC Co. Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Kyung-Han Sohn sits as Panelist.
The Complainant submitted a Complaint to the National Arbitration Forum (¡°the Forum¡±) electronically on December 12, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.
On January 4, 2002, YesNIC Co. Ltd. confirmed by e-mail to the Forum that the Domain Name <solidworks.info> is registered with YesNIC Co. Ltd. and that the Respondent is the current registrant of the name. YesNIC Co. Ltd. has verified that the Respondent is bound by the YesNIC Co. Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN¡¯s Uniform Domain Name Dispute Resolution Policy (the ¡°Policy¡±).
On January 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the ¡°Commencement Notification¡±), setting a deadline of January 31, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent¡¯s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 24, 2002.
On February 8, 2002, pursuant to the Complainant¡¯s request to have the dispute decided by a single-member Panel, the Forum appointed Kyung-Han Sohn as Panelist.
On February 9, 2002, this Panel issued an order that, pursuant to ICANN Rule 11, and in consideration of the fact that the Respondent¡¯s registration agreement is in Korean and of the circumstances of the administrative proceeding, the Complaint and required documents shall be submitted by the Complainant to the Forum in English and Korean and be transmitted to the Respondent, and the Respondent may submit the Response in Korean or English, and other communications to and from the Forum shall be in English.
The Complainant requests that the Domain Name be transferred from the Respondent to the Complainant.
A. The Complainant
1. The Complainant manufactures and sells computer software products, and has used ¡°SolidWorks¡± as a trade name of the Complainant¡¯s company and as a trademark of its computer software products in the field of computer-aided design. The Complainant introduced Solidworks95 in 1995 and has introduced updated software products in the following years in the United States and in numerous other countries. The trade name and the products of the Complainant can be identified in the Complainant¡¯s website, <solidworks.com>.
2. The Complainant registered ¡°SolidWorks¡± as a trademark with the United States Patent and Trademark Office on August 16, 1995 for its software products in the field of computer aided design (U.S.Reg.No.2030461). The Complainant registered ¡°SolidWorks¡± as a trademark in Korea on November 7, 1997 for goods described as computer program recorded tape, disk, diskette, and CD-ROM (Reg.No.381144), and also in at least thirty-two other countries in the world for the similar products.
3. The Respondent has no rights or legitimate interests in the Domain Name <solidworks.info> because the Respondent has not been commonly known by the Domain Name nor has it carried out any business under the Domain Name.
4. The Complainant e-mailed the Respondent to inquire about the Respondent¡¯s intention in registering the Domain Name <solidworks.info> and to request transferring the Domain Name to the Complainant. However, the Respondent refused transferring the Domain Name to the Complainant stating in his return e-mail that since the Respondent is in the process of planning the use of the Domain Name, the Respondent cannot inform the Complainant about his plan.
5. Although the Complainant is not sure of the Respondent¡¯s intention in registering the Domain Name <solidworks.info>, it is certain that the Respondent is preventing the Complainant from using its registered trademark with the ¡°.info¡± top-level domain. Therefore, the Domain Name registration should be transferred to the Complainant who has legitimate rights to the Domain Name as the owner of the registered trademark.
B. The Respondent
1. The Respondent is a university student majoring in mechanical engineering. The Respondent registered the Domain Name <solidworks.info> with an intention of forming a group of people to exchange information about ¡°SolidWorks¡± products, and the Respondent has not proposed sales for commercial purposes through the Domain Name.
2. The Respondent registered the Domain Name during the Open Registration Period after the Sunrise Period was over.
3. If the Complainant has legitimate rights to the Domain Name <solidworks.info>, the Complainant should have registered during the Sunrise Period. The Complainant forfeited his rights to the Domain Name by not registering during the Sunrise Period.
The findings of the undersigned is as follows:
1. The Domain Name is identical to the registered trademark of the Complainant in Korea, in the United States, and in numerous other countries;
2. The Complainant failed to prove that the Respondent does not have rights or legitimate interests in respect of the Domain Name; and
3. The Complainant failed to prove that the Domain Name has been registered and used by the Respondent in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the ¡°Rules¡±) instructs this Panel to ¡°decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.¡±
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
According to the statements and the evidence submitted by the Complainant, it is undisputed that the Complainant registered its trademark ¡°SolidWorks¡± in 32 countries including the United States and Korea for such goods as computer software products in the field of computer aided design prior to the Respondent¡¯s registering the Domain Name. Further, the Respondent¡¯s disputed domain name is identical with the trade name of the Complainant¡¯s company and with the widely known U.S. registered trademark of the Complainant. See Viewsonic Corp. v. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6, 2000) (finding that the Domain Names <viewsonic.net> and <viewsonic.org> are identical to the Complainant¡¯s VIEWSONIC mark).
Therefore, the Complainant proved adequately that the Domain Name is identical and/or confusingly similar to the trademark of the Complainant.
Rights or Legitimate Interests
Since there is a greater possibility that <.info> domain names are registered for non-business & non-commercial purposes such as dissemination of useful information unlike <.com> and <.biz> used for business & commercial purposes, necessity of layperson¡¯s free use shall be considered as well as protection of a specified person¡¯s exclusive right in interpreting ¡°Legitimate Interests¡± or ¡°Bad Faith.¡±
Concerning <.info> domain names, priority to register was offered to the parties who have legitimate rights to domain names during the Sunrise Period, and the Respondent registered the Domain Name during the Open Registration period after the Sunrise Period was over. Therefore, it can be regarded that the Respondent acquired relatively stronger right by registering the Domain Name under <.info> than under the existing gTLDs such as <.com>, <.net>, and <.org>. Further, although the Respondent is not practically using the Domain Name after the registration, considering the Respondent¡¯s contention that he is in the process of constructing a homepage and the fact that only four months passed from the registration of the Domain Name to initiation of this arbitration proceeding, it cannot be concluded that legitimate interests do not exist just because of nonuse.
Therefore, the Complainant did not adequately prove that the Respondent does not have any rights or legitimate interests with respect to the Domain Name.
Since the Respondent registered the Domain Name during the Open Registration Period after the Sunrise Period ended, the Complainant need stronger evidence to prove that the Respondent registered the Domain Name in bad faith.
Although it is accepted that the Respondent had knowledge about the Complainant¡¯s trademark before the Respondent registered the Domain Name, the fact itself does not automatically presume the Respondent¡¯s bad faith. The Complainant¡¯s contention that the Respondent registered the Domain Name with the intention to disrupt the Complainant¡¯s business is without reason because the Domain Name was lawfully registered during the Open Registration Period. If the Complainant¡¯s contention is accepted, bad faith can be found regardless who registered the Domain Name on the reason of disruption purpose of the Complainant¡¯s business, therefore the system of offering layperson a chance to register after the Sunrise Period ended will become meaningless.
By looking at the contents of the e-mails exchanged between the Complainant and the Respondent, it cannot be concluded that the Respondent registered the Domain Name for the purpose of either sales or disruption of the Complainant¡¯s business. Therefore, the Complainant did not adequately prove the Respondent¡¯s bad faith.
The Complainant has not fulfilled all three requirements of the paragraph 4(a) of the Policy, therefore, it is the decision of the Panel that the relief sought not be granted, and this complaint be dismissed.
Accordingly, for all of the foregoing reasons, it is ordered that the Complainant¡¯s request for transfer of the Domain Name <solidworks.info> be dismissed.
Kyung-Han Sohn, Panelist
Dated: March 8, 2002
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